Trials@uspto.gov Paper 50
`571-272-7822
` Entered: December 3, 2018
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NAUTILUS, INC.,
`Petitioner,
`v.
`ICON HEALTH & FITNESS INC.,
`Patent Owner.
`
`Case IPR2017-01407
`Patent 9,616,276 B2
`
`Before GEORGE R. HOSKINS, TIMOTHY J. GOODSON, and
`JAMES A. WORTH, Administrative Patent Judges.
`WORTH, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`571-272-7822
` Entered: December 3, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NAUTILUS, INC.,
`Petitioner,
`v.
`ICON HEALTH & FITNESS INC.,
`Patent Owner.
`
`Case IPR2017-01407
`Patent 9,616,276 B2
`
`Before GEORGE R. HOSKINS, TIMOTHY J. GOODSON, and
`JAMES A. WORTH, Administrative Patent Judges.
`WORTH, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
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`IPR2017-01407
`Patent 9,616,276 B2
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`I. INTRODUCTION
`On May 12, 2017, Nautilus, Inc. (“Petitioner”) filed a Petition (Paper
`2, “Pet.”) requesting inter partes review of claims 1–4 and 7–10 (“the
`challenged claims”) of U.S. Patent No. 9,616,276 B2 (Ex. 1001, “the ’276
`patent”) on the following grounds:
`
`References
`
`Sawicky1 and Wu2
`
`Sawicky, Wu, and Watson3
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`Sawicky and Zhou4
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`Sawicky, Zhou, and Loach5
`
`Basis
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Claims challenged
`1–4, 10
`
`7–9
`
`1–4, 10
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`7–9
`
`ICON Health & Fitness Inc. (“Patent Owner”) did not file a
`Preliminary Response.
`On December 4, 2017, the Board instituted an inter partes review.
`Paper 6 (“Dec.”). We initially instituted review for a subset of the asserted
`claims and asserted grounds. See Dec. 26. Specifically, we determined
`based on the preliminary record that Petitioner had demonstrated a
`reasonable likelihood of prevailing in its challenge to claims 1, 2, and 10 as
`
`
`1 U.S. Patent No. 5,042,798, iss. Aug. 27, 1991 (Ex. 1011).
`2 U.S. Patent Application Publication No. 2003/0171192 A1, pub. Sept. 11,
`2003 (Ex. 1002).
`3 U.S. Patent Application Publication No. 2006/0234840 A1, pub. Oct. 19,
`2006 (Ex. 1004).
`4 U.S. Patent No. 8,517,899 B2, iss. Aug. 27, 2013 (Ex. 1006).
`5 W.O. Patent Application Publication No. 2007/015096 A2, pub. Feb. 8,
`2007 (Ex. 1007).
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`obvious over Sawicky and Wu; claims 7 and 9 as obvious over Sawicky,
`Wu, and Watson; claim 8 as obvious over Sawicky, Wu, Watson, and
`Street6; and claims 1, 2, and 10 as obvious over Sawicky and Zhou. See
`Dec. 26. We determined based on the preliminary record that Petitioner had
`not demonstrated a reasonable likelihood of prevailing in its challenge to
`claims 3 and 4 as obvious over Sawicky and Wu, nor over Sawicky and
`Zhou. Dec. 17, 23.
`Also on December 4, 2017, we issued a Scheduling Order for the
`proceeding. Paper 7.
`Subsequently on April 27, 2018, pursuant to the holding in SAS Inst.,
`Inc. v. Iancu, 138 S. Ct. 1348, 1355–57 (2018), we issued an Order (Paper
`18) modifying our institution decision to institute on all of the challenged
`claims and all of the grounds presented in the Petition.
`After institution of trial, Patent Owner did not file a Patent Owner
`Response to the Petition. Petitioner did not seek to address further any of
`the claims or grounds from the Petition added to the proceeding pursuant to
`SAS.
`
`However, during the proceeding, Patent Owner filed a Motion to
`Amend (Paper 16, “Mot. Amend”) on March 5, 2018. On May 7, 2018, we
`issued an Order (Paper 19) authorizing a 10-page extension of the page limit
`for Petitioner’s opposition to the Motion to Amend and deferred action on a
`request by Petitioner for authorization for surreplies. On June 4, 2018,
`Petitioner filed an Opposition to Patent Owner’s Motion to Amend (Paper
`20, “Opposition” or “Opp.”). Patent Owner obtained authorization from the
`
`6 U.S. Patent No. 4,625,962, iss. Dec. 2, 1986 (Ex. 1008, Appendix V,
`“Street”).
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`Board, by email, for a corresponding 10-page extension for Patent Owner’s
`reply thereto. On July 5, 2018, Patent Owner filed a Reply to Petitioner’s
`Opposition to Patent Owner’s Motions to Amend (Paper 27, “Motion
`Reply”).7
`On July 12, 2018, after conferring with the Board, the parties filed a
`joint stipulation for amending the scheduling order to provide for further
`briefing by Petitioner. Paper 31. On July 20, 2018, we issued an Order
`(Paper 34) authorizing Petitioner to file a limited Motion Surreply with the
`deposition transcript of Dr. Ganaja according to the stipulation of the parties.
`On August 1, 2018, Petitioner filed a Motion Surreply (Paper 35)8 and the
`deposition transcript of Dr. Ganaja (Ex. 1020).
`After a further conference call with the parties on August 3, 2018 held
`at the request of Patent Owner, we issued an Order (Paper 37) on August 7,
`2018, striking portions of the Motion Surreply as contrary to the stipulation
`of the parties. Paper 37, 3–4. Also pursuant to the Order, Patent Owner
`filed a list of purportedly improper arguments in the Motion Surreply on
`August 8, 2018. Paper 38.
`On August 10, 2018, Patent Owner filed a Motion to Exclude
`Evidence (Paper 41, “Mot. Excl.”). On August 21, 2018, Petitioner filed an
`Opposition to Patent Owner’s Motion to Exclude (Paper 43). On August 22,
`
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`7 Patent Owner filed a separate Motion to Amend in each of Cases IPR2017-
`01407 and -1408, in each case proposing substitute claims numbered 21 and
`22. Petitioner filed the same Opposition and Patent Owner filed the same
`Motion Reply in each of IPR2017-01407 and -1408. We have written
`separate opinions in order to avoid confusion, e.g., because the proposed
`substitute claims in IPR2017-01407 and -1408 have overlapping numbering.
`8 Petitioner’s Motion Surreply applies to both IPR2017-01407 and -1408.
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`2018, Patent Owner filed a Reply to Petitioner’s Opposition to Patent
`Owner’s Motion to Exclude (Paper 45).
`On August 29, 2018, the Board held a single oral hearing covering
`IPR2017-01407, IPR2017-01408, and IPR2017-01363, a transcript of which
`has been entered in the record. Paper 49 (“Tr.”).
`We have authority under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1, 2, and 7–10 of the ’276 patent
`are unpatentable. The motion to amend is denied.
`A.
`Related Proceedings
`The parties state that there are no related district court proceedings.
`Pet. 2; see also Paper 3, 1. The parties note as related IPR2017-01408,
`which also challenges the ’276 patent. Pet. 2–3; Paper 3, 1. In addition,
`Petitioner identifies as related for case management purposes IPR2017-
`01363. Id.
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`B. The ’276 Patent (Ex. 1001)9
`The ’276 patent issued from the ’088 Application10, which is a
`continuation of the ’793 Application11, which was based on ’007 Provisional
`Application12. Ex. 1001, [21], [60], [63]; Ex. 1009, 3.
`The ’276 patent is titled “Strength Training Apparatus With Flywheel
`and Related Methods” and relates to “strength training equipment including
`a flywheel and to related methods.” Ex. 1001, [54], 1:15–17.
`The ’276 patent describes a difficulty in integrating aerobic and
`anaerobic activities, i.e., it is more difficult to track or calculate calories
`burned when doing strength training exercises. Id. at 1:56–63. The ’276
`patent discloses a strength-training device that may include a cable and
`pulley system, a flywheel with a magnetic brake to provide resistance, and a
`torque sensor. See id. at 2:20–34. The flywheel may be combined with a
`drive mechanism and a one-way clutch that exerts a force on the flywheel in
`one direction when a user pulls a cable. Id. at 2:53–67. The device of the
`’276 patent may also include a console in communication with the magnetic
`brake to adjust the resistance and to display the amount of work performed.
`Id. at 2:39–52.
`
`9 Petitioner has averred relation of the ’276 patent back to a (pre-AIA)
`provisional application in satisfaction of the certification requirement of 37
`C.F.R. § 42.104(a). See Pet. 5.
`10 U.S. Patent Application No. 15/019,088, filed Feb. 9, 2016 (Ex. 1009, 1–
`36, “the ’088 Application).
`11 U.S. Patent Application No. 14/213,793, filed Mar. 14, 2014 (Ex. 2005,
`Ex. 2006 (drawings), “the ’793 Application”).
`12 U.S. Provisional Patent Application No. 61/786,007, filed Mar. 14, 2013
`(Ex. 2003, Ex. 2004 (drawings); see also Ex. 1010, “the ’007 Provisional
`Application”).
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`An embodiment of the device of the ’276 patent is depicted below:
`
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`Figure 5A depicts a view of the strength training apparatus. Id. at 4:14–17.
`In particular, Figure 5A depicts displacement of handle 118A due to
`application of force by an individual during exercise. Id. at 6:37–41.
`Handle 118A is connected to cable 116A, which wraps around pulley 114A.
`See id. at 4:52–54.
`Displacement of the handle 118A results in displacement of
`associated cable 116A and, ultimately, displacement of drive chain 150. Id.
`at 6:42–44. As indicated in Figure 5A, a first portion of drive chain 150 is
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`displaced upwards towards first sprocket 154 as indicated by directional
`arrow 170 while a second portion of drive chain 150 is displaced downwards
`away from second sprocket 156 and towards input shaft 144 as indicated by
`directional arrow 172. Id. at 6:44–49. This displacement of the drive chain
`also includes the downward displacement of second sprocket 156 against the
`force of biasing members 160 as seen in both Figures 5A and 5B. Id. at
`6:49–53. The displacement of drive chain 150 results in the rotation of input
`shaft 144, actuating drive mechanism 140 such that drive belt 148 drives
`flywheel 120. Id. at 6:53–56.
`In one example, input device 132 (depicted in Figure 1) of control
`panel 130 may be used to set a desired resistance level that is to be applied
`to flywheel 120 by controlling an actuating member associated with braking
`mechanism 124. Id. at 5:52–55. Output device 134 (e.g., a display) may
`indicate the current or selected level of resistance. Id. at 5:55–57, Fig. 1.
`Output device 134 of control panel 130 may also provide an indication of the
`amount of work performed within a period of time calculated, for example,
`based on the torque applied to flywheel 120 as measured by torque sensor
`128. Id. at 5:57–61.
`
`C. Illustrative Claim
`Claim 1, reproduced below, is the sole independent challenged claim
`in this proceeding and is illustrative of the subject matter:
`1.
`A strength training apparatus, comprising:
`a base member;
`a tower structure coupled to the base member;
`at least one arm coupled to the tower structure;
`a pulley being coupled to the at least one arm;
`a cable extending through the pulley;
`a handle coupled to a first end of the cable;
`a flywheel connected to the tower structure;
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`that
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`a magnetic braking mechanism
`movement of the flywheel; and
`a console in communication with the magnetic
`braking mechanism;
`wherein displacement of the handle results in
`rotation of the flywheel.
`
`resists
`
`
`Ex. 1001, 8:23–36.
`II. ANALYSIS OF GROUNDS ASSERTED IN PETITION
`A. Claim Construction
`In this inter partes review, filed May 12, 2017, a claim in an
`unexpired patent shall be given its broadest reasonable construction in light
`of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b)
`(2016); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142
`(2016) (affirming that USPTO has statutory authority to construe claims
`according to 37 C.F.R. § 42.100(b)). Under that standard, and absent any
`special definitions, we give claim terms their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art at the
`time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007). Any special definitions for claim terms must be set forth
`with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30
`F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner requests construction of the following terms: “sprocket”
`(claims 3, 4); “in communication with” (claims 1, 3); “biasing member”
`(claims 2, 3); and “connected to/fixed to” (claims 1, 3, 10). Pet. 7–10.
`Patent Owner does not request construction of any terms. In our Decision
`on Institution, we set forth preliminary constructions of the four terms
`identified by Petitioner. Neither party has contested the constructions set
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`forth in the Decision on Institution. After considering all evidence and
`arguments anew, we determine that it is proper to maintain the constructions,
`which we discuss as follows.
`1. “sprocket” (claims 3, 4)
`Petitioner proposes that the broadest reasonable interpretation of
`“sprocket” is “a cylindrical element upon which a chain, cable, rope, or belt
`can be guided.” Pet. 7. Petitioner argues that the Specification teaches that
`pulleys and sprockets are interchangeable based on the statement in the
`Specification that “drive chain 150 extends through several pulleys or
`sprockets.” See id. at 7–8 (citing Ex. 1001, 6:23–24). Petitioner also relies
`on Dr. Rawls for the understanding that the ’276 patent must allow for
`structures that work with cables, chains, belts, ropes, or other pulling
`elements. Id. at 8 (citing Ex. 1008 ¶¶ 90–91). In other words, Petitioner
`argues that the ’276 patent makes use of cables which work with pulleys.
`In the Decision on Institution, we set forth the preliminary
`construction of “sprocket” to mean “a wheel with teeth.” Dec. 8. We
`reasoned that “[t]he plain and ordinary meaning of sprocket as a wheel with
`teeth is consistent with the usage in the Specification and the claims, which
`differentiates sprockets from pulleys.” Id. (citing Ex. 1001, 4:50–58, 6:17–
`27; Ex. 3001).
`Although there may be areas of functional overlap between a sprocket
`and a pulley, the parties appeared to be in agreement that a sprocket has
`teeth, that a pulley does not have teeth, and Petitioner indicated that it did
`not contest the preliminary construction of “sprocket” set forth in the
`Decision on Institution. See Tr. 49:1–8, 76:1–20.
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`After considering all evidence and arguments anew, we determine that
`it is proper to maintain our construction of sprocket from institution as “a
`wheel with teeth.” See Ex. 3001.
`2. “in communication with” (claims 1, 3)
`Petitioner asserts that the broadest reasonable interpretation of “in
`communication with” is “direct or indirect connection to, or exchange.” Pet.
`8 (citing Ex. 1008 ¶ 94).
`In the Decision on Institution, we set forth the preliminary
`construction of “in communication with” to mean “in direct or indirect
`connection to.” Dec. 9.
`After considering all evidence and arguments anew, we determine that
`it is proper to maintain our construction of “in communication with” to mean
`“in direct or indirect connection to.”
`3. “biasing member” (claims 2, 3)
`Petitioner asserts that the broadest reasonable interpretation of
`“biasing member” is a “component that applies force to machine elements
`toward their original positions.” Pet. 8–9 (citing Ex. 1008 ¶ 92).
`In the Decision on Institution, we set forth the preliminary
`construction of “biasing member” to mean a “component that applies force
`to machine elements toward their original positions.” Dec. 9.
`After considering all evidence and arguments anew, we determine that
`it is proper to maintain our construction of “in communication with” to mean
`a “component that applies force to machine elements toward their original
`positions.”
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`4. “connected to/fixed to” (claims 1, 3, 10)
`Petitioner asserts that the broadest reasonable interpretation of
`“connected to/fixed to” is “attached directly or indirectly via intermediate
`components.” Pet. 9–10 (citing Ex. 1008 ¶¶ 95–96).
`In the Decision on Institution, we set forth the preliminary
`construction of “connected to/fixed to” to mean “in direct or indirect
`connection to.” Dec. 10.
`After considering all evidence and arguments anew, we determine that
`it is proper to maintain our construction of “connected to/fixed to” to mean
`“in direct or indirect connection to.”
`B. Principles of Law
`To prevail in its challenges to the patentability of the claims,
`Petitioner must prove unpatentability by a preponderance of the evidence.
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
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`the level of skill in the art; and (4) objective evidence of nonobviousness.
`Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).
`
`C. Obviousness of Claims 1–4 and 10 over Sawicky (Ex. 1011)
`and Wu (Ex. 1002)
`Petitioner contends that claims 1–4 and 10 are unpatentable as
`obvious over Sawicky and Wu. Pet. 24–42.
`1. Overview of Sawicky
`Sawicky is titled “Upper Body Aerobic Training Machine” and relates
`to a multipurpose aerobic training machine that is of compact design and
`lightweight construction. See Ex. 1011, [54], 1:8–12. Sawicky describes a
`machine that is operated in the vertical mode and the user’s upper body
`muscles are involved in pulling downwardly from overhead and continuing
`the movement to press down from the waist. Id. at 1:42–46. Sawicky’s
`machine makes use of a freewheel that is operatively connected to the grip
`bar by an assembly of lines and pulleys so that the freewheel is rotated as the
`grip bar is pulled down. Id. at 2:28–32. The rate of rotation and
`consequently the rate of energy expense are in direct proportion to the rate of
`downward travel of the grip bar. Id. at 2:32–35. Figures 1 and 2 of Sawicky
`are reproduced below:
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`Figure 1 of Sawicky depicts a perspective view in elevation of a machine
`with a tripod base and an assembly at the top. Id. at 2:62–64. Figure 2 is a
`fragmentary view that depicts the line and pulley combination apart from the
`frame. Id. at 2:65–68.
`
`Sawicky identifies item 60 as a floating pulley which is kept in tension by
`elastic cord 62. Id. at 3:52–58. Sawicky additionally identifies item 52 as a
`pulley. Id. at 3:41. However, Sawicky discloses a sprocket, item 58,
`associated with freewheel axle 40, depicted in Figure 3 below (id. at 3:49–
`54):
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`Figure 3 depicts a fragmentary side elevation view of Sawicky’s machine.
`Id. at 3:1–3.
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`2. Overview of Wu
`Wu is titled “Weight Lifting Exerciser” and relates to an exerciser
`using a non-friction magnetic resistance device to create a proper exercise
`resistance. Ex. 1002, [54], ¶ 2. Wu discloses that the machine utilizes a
`flywheel that travels unidirectionally and that resistance force will not be
`created in the return direction of the pulling elements. Id. ¶¶ 1, 7, 13. A
`preferred embodiment is depicted in Figure 1 below:
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`Figure 1 depicts a perspective view of a preferred embodiment. Id. ¶ 9.
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`Electronic element 70 drives magnet set 24 to adjust the clearance between
`unidirectional flywheel 22 and magnet set 24 so as to obtain an expected
`exercise resistance. Id. ¶ 13.
`
`3. Analysis
`In its Petition, Petitioner sets forth its contentions as to how the
`limitations of claims 1–4 and 10 are disclosed in, or obvious over, the
`combination of Sawicky and Wu. Pet. 21–22, 24–42. As noted above,
`Patent Owner did not file a Patent Owner Response. Thus, the record
`contains only Petitioner’s contentions and evidence and no responsive
`evidence or argument from Patent Owner.
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`a. Independent claim 1
` i. “a base member” and “a tower structure coupled to the base member”
`Petitioner asserts, inter alia, that Sawicky discloses a base and a tower
`
`coupled thereto. Pet. 25–26 (citing, e.g., Ex. 1011, Abstract, 4:39–55, 2:15–
`19, 3:12–14, 3:26–29, claim 5, claim 7, Fig. 1; Ex. 1008 ¶¶ 170–173). We
`find that Sawicky discloses these limitations. In particular, Sawicky
`discloses a base with several legs attached to a tower-like frame. Ex. 1011,
`2:15–19, 3:12–14, Fig. 1.
`ii. “at least one arm coupled to the tower structure,” “a pulley being
`coupled to at least one arm,” “a cable extending through the pulley,” and
`“a handle coupled to a first end of the cable”
`Petitioner asserts, inter alia, that Sawicky discloses an arm coupled to
`the tower, a pulley coupled to the arm, a cable extending through the pulley,
`and a handle coupled to the cable. Pet. 27–31 (citing, e.g., Ex. 1011, 3:37–
`39, 3:46–54, Figs. 1–2; Ex. 1008 ¶ 174–182). We find that Sawicky
`discloses a tower and an arm coupled to a pulley with a cable and handle, as
`recited. In particular, Sawicky discloses “a bolt-on subassembly including
`an open box-like frame 51,” coupled to the top of the tower, which
`accommodates pulley 52 with accompanying cable 55 for grip bar 13. Ex.
`1011, 3:38–48, Fig. 1.
`iii. “a flywheel connected to the tower structure”
`Petitioner asserts, inter alia, that Sawicky discloses a fly wheel
`
`mounted on rear strut 19 of the tower-like frame. Pet. 31–32 (citing, e.g.,
`Ex. 1011, 3:30–36, Fig. 3; Ex. 1008 ¶ 184). We find that Sawicky discloses
`a flywheel connected to a tower, as recited. In particular, Sawicky discloses
`freewheel 12 having axle 40, mounted between tie bar 23 and rear strut 19
`where it is journaled in bearings. Ex. 1011, 3:30–36, Fig. 3.
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`iv. preamble, “a magnetic braking mechanism that resists movement of the
`flywheel,” and “a console in communication with the magnetic braking
`mechanism”
`Petitioner asserts, inter alia, that Wu discloses a strength training
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`apparatus with a magnetic braking system and a console in communication
`therewith. Pet. 25, 33–35 (citing, e.g., Ex. 1002, Title, Abstract, ¶ 13; Ex.
`1008 ¶¶ 170, 186–189). We find that Wu discloses the recited limitations.
`In particular, Wu discloses a weight lifting exerciser with magnetic
`resistance 24 and console 10. Ex. 1002 ¶¶ 13, 19. Wu further discloses that
`resistance on the device is adjustable. Id. Wu discloses that electronic
`adjustment element 70 is utilized to drive magnet set 24 for adjusting the
`clearance between magnet set 24 and flywheel 22 to obtain an expected
`exercise resistance. Id. ¶ 13. Wu discloses that a user can set a heartrate on
`the console such that if there is insufficient or excess heartrate, the console
`will command electronic adjustment element 70 to adjust the resistance. Id.
`¶ 19. Although setting a heartrate is not a direct way to adjust resistance, the
`claim does not require more than communication between the console and
`the magnetic braking mechanism, which is present.
`
`Petitioner contends that a person of ordinary skill in the art would
`have modified the apparatus of Sawicky with the magnetic resistance taught
`by Wu, inter alia, in order to reduce the size of the flywheel. Pet. 22 (citing
`Ex. 1008 ¶¶ 149–150). On the basis of the evidence, we are persuaded that a
`person of ordinary skill would have sought to modify the apparatus of
`Sawicky by adding a magnetic resistance to reduce the size of the apparatus,
`to more precisely alter the resistance level, and to maintain a constant or
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`varied resistance. See Ex. 1008 ¶ 149. This is in keeping with a stated goal
`of Sawicky to provide a compact apparatus. See Ex. 1011, 1:11.13
`v. “wherein the displacement of the handle results in rotation of the
`flywheel”
`Petitioner asserts, inter alia, that Sawicky’s device possesses the
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`functionality recited in the “wherein” clause. Pet. 36 (citing, e.g., Ex. 1011,
`1:43–47, 2:38–32, 3:57–4:5; Ex. 1008 ¶ 192). We find that Sawicky
`discloses the recited rotation. In particular, Sawicky describes that the
`freewheel is rotated as the grip bar is pulled down from the topmost position.
`Ex. 1011, 2:38–32.
`
`vi. Summary
`We determine that Sawicky and Wu disclose the limitations of
`independent claim 1 and that it would have been obvious to a person of
`ordinary skill to combine Sawicky and Wu. Accordingly, we determine that
`independent claim 1 is obvious over Sawicky and Wu.
`b. claims 2 and 10
`Claim 2 depends from claim 1 and further recites “a biasing member
`that returns the handle without causing rotation of the flywheel.” Ex. 1001,
`8:37–39. Petitioner asserts that Sawicky’s elastic cord 62 is a biasing
`member. Pet. 36–37. Petitioner argues that a person of ordinary skill in the
`art would understand that when a single pull cable or chain is fixed to a
`frame on one end, when the cable or chain is routed over a displaceable
`
`
`13 Although Patent Owner did not file a Patent Owner Response, Patent
`Owner included some arguments in its Reply in support of its Motion to
`Amend regarding the rationale for the combination of Sawicky and Wu,
`which we address below in the context in which they were made. See
`§ III.F.1.d.iii., infra.
`
`18
`
`
`
`IPR2017-01407
`Patent 9,616,276 B2
`
`pulley or sprocket connected to a tension cord or biasing member, and when
`a user has pulled a handle on the other end of the cable or chain, the biasing
`member will cause the handle to retract when a user releases her pulling
`force. See id. (citing Ex. 1011, 3:45–4:5, Fig. 2; Ex. 1008 ¶ 195–196).
`We find Sawicky discloses the “biasing member” limitation of claim
`2. In particular, Sawicky discloses that elastic cord 62 is attached to floating
`pulley 60 and anchored to stringer 19; that elastic cord 62 supplies constant
`tension for roller chain 57; that when a user pulls on grip bar 13, floating
`pulley 60 is forced downward; and that when the user pulling force ceases,
`elastic cord 62 provides tension on chain 57, cable 55, and grip bar 13 to
`return them to their starting position. See Ex. 1011, 3:50–4:5, Fig. 2; Ex.
`1008 ¶¶ 195–196.
`Petitioner asserts that the retraction of the handle does not cause
`rotation of Sawicky’s flywheel because it is a “freewheel,” which a person
`of ordinary skill would understand to have a unidirectional clutch. Pet. 38
`(citing Ex. 1008 ¶¶ 195–197). We credit, as consistent with other evidence
`of record, the testimony of Dr. Rawls that a person of ordinary skill would
`understand that Sawicky’s freewheel 12 has a unidirectional clutch that does
`not cause rotation when the handle retracts. Ex. 1008 ¶¶ 110, 196; Ex. 1011,
`3:30–35, 3:60 (discussing freewheel 12); see Ex. 1007, 3:1–3 (freewheel
`mechanism of Loach).
`Claim 10 depends from claim 1 and further recites “wherein the cable
`includes a second end that is fixed to the tower structure.” Ex. 1001, 8:61–
`63. Petitioner asserts that Sawicky discloses that its single line of cable 55
`and chain 57 is attached directly to an anchor point on stringer 19 (which is
`part of the upright tower structure). Pet. 41 (citing Ex. 1011, 3:35–55, Figs.
`
`19
`
`
`
`IPR2017-01407
`Patent 9,616,276 B2
`
`1–3). We find that Sawicky discloses this limitation. In particular, roller
`chain 57 has an anchor point on stringer 19, which is the rear strut of the
`tower. Ex. 1011, 3:18–32, 3:50–54, Fig. 3.
`We have determined with respect to claim 1 that a person of ordinary
`skill would have combined Sawicky and Wu. We, therefore, determine that
`claims 2 and 10 are obvious over Sawicky and Wu.
`c. claims 3 and 4
`Claim 3 depends from claim 2 and further recites “wherein the biasing
`member is in communication with a sprocket, and the cable extends through
`the sprocket.” Ex. 1001, 8:40–42. Claim 4 depends from claim 3, and
`further recites “wherein the sprocket is displaceable relative to the tower
`structure when the handle is pulled.” Id. at 8:43–45.
`For the “sprocket” of claims 3 and 4, Petitioner relies on Sawicky’s
`floating pulley 60, which is in communication with elastic cord 62 (i.e., the
`biasing member). Pet. 38–39 (citing Ex. 1011, 3:34–60, Fig. 2; Ex. 1008
`¶ 198). Applying the above claim construction of “sprocket,” we determine
`that Petitioner has not made an adequate showing that floating pulley 60 is a
`“sprocket.” We note that Sawicky differentiates between sprockets and
`pulleys. Ex. 1011, 3:52–54.
`Petitioner further suggests that the use of a sprocket, i.e., in
`conjunction with a biasing member, instead of a pulley would have been an
`obvious design choice (citing Ex. 1008 ¶¶ 198–200) and that the ’276 patent
`indicates that a cable may be used instead of drive chain 150 (citing Ex.
`1001, 6:17–20). See Pet. 39. Petitioner’s reliance on the teachings of the
`’276 patent is misplaced because “[t]he inventor’s own path itself never
`leads to a conclusion of obviousness; that is hindsight.” Otsuka Pharm. Co.,
`
`20
`
`
`
`IPR2017-01407
`Patent 9,616,276 B2
`
`Ltd. v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012). Neither the
`Petition nor the Rawls Declaration provide adequate reasoning to distinguish
`this argument from a hindsight analysis based on the Specification of the
`’276 patent. See Cutsforth, Inc. v. MotivePower, Inc., 636 Fed. Appx. 575
`(Fed. Cir. 2016) (concluding that design choice in itself constituted
`conclusory reasoning) (citing In re Sang–Su Lee, 277 F.3d 1338 (Fed. Cir.
`2002); In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000); In re Rouffet,
`149 F.3d 1350, 1359 (Fed. Cir. 1998)).14 Accordingly, we determine that
`Petitioner has not demonstrated that the combination of Sawicky and Wu
`renders obvious claims 3 and 4.
`D. Obviousness of Claims 7–9 over Sawicky, Wu, and
`Watson
`Petitioner contends that claims 7–9 are unpatentable as obvious over
`Sawicky, Wu, and Watson. Pet. 22–23, 42–46.
`1. Overview of Watson
`Watson is titled “Closed Loop Control of Resistance in a Resistance-
`Type Exercise System” and relates to an exercise device or system that
`incorporates a rotating member for resisting input forces by a user, and a
`resistance control arrangement in such a system. See Ex. 1004, [54], ¶ 2.
`Watson discloses that the rotating member may be the wheel of a bicycle.
`Id. ¶ 10. Figure 5 of Watson is depicted below:
`
`
`14 Although we are not persuaded by Petitioner’s proffered rationale for
`replacing a pulley with a sprocket (without reference to the Specification of
`the ’276 patent), elsewhere we are persuaded by Petitioner’s proffered
`rationale for replacing a sprocket with a pulley in order to make a lighter
`machine. See § III.F.d.iii.; see also Tr. 76:17–20.
`
`21
`
`
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`IPR2017-01407
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`
`
`Figure 5 of Watson is a partial longitudinal view of the resistance unit.
`Id. ¶ 20.
`
`Figure 5 depicts an embodiment with a rotational torque sensor, which
`may be in the form of strain gauges 320, which rotate with shaft 307. Id.
`¶ 43. Watson discloses that the rotational torque sensor is used to determine
`the degree of resistance to rotation of flywheel 306 by magnet assembly 312.
`Id.
`
`2. Analysis
`a. claim 7
` Claim 7 depends from claim 1 and further recites “a torque sensor
`
`proximate the flywheel.” Ex. 1001, 8:52–53. Petitioner asserts that Watson
`discloses the recited torque sensor. Pet. 42–43 (citing Ex. 1004 ¶¶ 43, 62;
`Ex. 1008 ¶ 205). We find that Watson discloses a torque sensor proximate a
`flywheel. In particular, Watson discloses strain gauges 320, which Figure 5
`depicts to be proximate to flywheel 306. See Ex. 1004 ¶ 43, Fig. 5.
`Petitioner contends that it would have been obvious to a person of ordinary
`skill to have further modified the a
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